In the case discussed in our initial post, the Court found that use of #cloudpen did not violate a settlement agreement that prohibited a party from creating “a unitary trademark … which includes CLOUD in close association with the words ‘pen,’ ‘pens,’ ‘penz,’ ‘pad,’ or ‘fuel.’” The Court cited the Trademark Manual of Examining Procedure (TMEP) and stated that “[t]he addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically cannot render it registrable.” (See TMEP § 1202.18 – “Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media.”) Thus, the Court found the plaintiffs’ use of #cloudpen to be a merely descriptive device (to direct the location of the plaintiffs’ promotion so it is viewed by a group of consumers) and not as a trademark. Consequently, one thing to keep in mind is that the “#” symbol does not add any source-indicating to a mark and the focus must be on the rest of the mark itself.

But what if the rest of the mark is a rather generic expression? It turns out that Kris Jenner, matriarch of the Kardashian clan, has been exploring that avenue. On March 25, 2015, Jenner Communications Inc. filed a trademark application for #PROUDMAMA in connection with “advertising, marketing and promotion services.” At least one news source indicates that Ms. Jenner uses the hashtag in celebrating family moments on social media. According to the U. S. Patent and Trademark Office (USPTO) trademark database, the application passed through examination with no office action rejections and obtained a Notice of Allowance on October 6, 2015.

Because the hashtag has primarily been used as a functional tool to categorize and search images and information on social media, the increasing use of the symbol in trademarks will likely result in more court battles over the practice. In particular, the courts will need to reconcile the extent to which the words that follow a hashtag provide a sufficient recognition of the source of goods or services associated with those words such that the trademark owner can prevent others from using the hashtag as a functional tool on social media.

One can imagine Instagram users posting photographs of their children with #PROUDMAMA. Of course, such use would be considered descriptive fair use and thus a defense to trademark infringement. To come within this fair use defense a person must make use of the other party’s trademark (i) other than as a mark, (ii) in a descriptive sense, and (iii) in good faith. (See 15 U.S.C. §1115(b)(4).) Further, this type of non-competitive use is not what would trigger enforcement by a trademark owner. However, consider an Instagram user who posts photographs to advertise or promote his or her goods and/or services, and who tags the photographs with #PROUDMAMA. If the goods and/or services focused on maternity or children’s products, could there still be an argument that the use was descriptive fair use? As the use of social media continues to grow, especially in advertising, so does the tension between using social media tools like the hashtag in a functional sense versus their use as protected intellectual property.